DECISION

Burnham Corporation and Boiler Properties, Inc. v. Domain Research and Sales

Claim Number: FA0112000102741

PARTIES

Complainants are Burnham Corporation, Lancaster, PA, and Boiler Properties, Inc., Kewanee, IL, (“Complainants”) represented by Stanley B. Kita, of Howson and Howson.  Respondent is Domain Research and Sales, Radviliskis, Lithuania (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <burnhamcorp.com>, registered with Bulkregister.com, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 5, 2001; the Forum received a hard copy of the Complaint on December 6, 2001.

On December 6, 2001, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain name <burnhamcorp.com> is registered with Bulkregister.com, Inc. and that Respondent is the current registrant of the name.  Bulkregister.com, Inc. has verified that Respondent is bound by the Bulkregister.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 31, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@burnhamcorp.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 11, 2002, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainants request that the domain name be transferred from the Respondent to the Complainants.

PARTIES’ CONTENTIONS

A. Complainants

The disputed domain name <burnhamcorp.com> is confusingly similar to BURNHAM, a mark in which Complainants hold rights.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainants registered the BURNHAM trademark on the Principal Register of the United States Patent and Trademark Office on July 30, 1991 as Registration No. 1,652,229 and have continuously used the mark in commerce since 1891 in association with furnaces and heating and cooling products.  Complainants also hold a registered trademark in BURNHAM INDUSTRIAL.

Respondent registered the disputed domain name on June 21, 2001, and has used the domain to host or advertise commercial pornographic material and to solicit offers to buy the domain name (with a minimum required bid of $550).

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainants’ undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainants must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainants have sufficiently established their rights in the BURNHAM mark through registration with the U.S. Patent and Trademark Office.

The disputed domain name is confusingly similar to Complainants’ mark, as it incorporates the entire mark and merely adds the generic term “corp.”  The addition of the word “corp” to the mark does not defeat confusing similarity.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contained the identical mark of the Complainant combined with a generic word or term); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combined the Complainant’s mark with a generic term that had an obvious relationship to the Complainant’s business).

Similarly, the inclusion of “.com” in the disputed domain name does not affect the name for the purpose of determining whether it is confusingly similar to Complainants’ mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainants have established their rights to and legitimate interests in the BURNHAM mark. Because Respondent has failed to submit a Response in this proceeding, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent’s use of the disputed domain name to advertise pornographic material and to offer the domain name for sale cannot be considered bona fide offerings of goods or services within the meaning of Policy ¶ 4(c)(i).  See Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that use of a domain name to attract/redirect users to another pornographic site is not a legitimate use); see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

Further, there is no evidence that Respondent is commonly known as “burnhamcorp” or “burnhamcorp.com,” pursuant to Policy ¶ 4(c)(ii), or that Respondent has made a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied and that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Registration and Use in Bad Faith

Respondent’s intentional registration and use of a domain name so closely affiliated with the Complainants demonstrates bad faith under the Policy.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., supra, (finding that the domain names were so obviously connected with the Complainants that their use or registration by anyone other than Complainants suggests “opportunistic bad faith”).

Further, Respondent’s posted offer to sell the disputed domain name for an unnamed price greater than $550 evinces bad faith under Policy ¶ 4(b)(i).  See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).

Finally, the use of the disputed domain name to link to pornographic material also suggests bad faith by Respondent.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well known mark to provide a link to a pornographic site is not a legitimate or fair use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <burnhamcorp.com> domain name be transferred from Respondent to Complainants.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: January 14, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/41.html